Ex Parte Martinez et al

Patent Trial and Appeal BoardMar 24, 2017

12100081 (P.T.A.B. Mar. 24, 2017)

United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/100,081 04/09/2008 Michael G. Martinez CTI-1002 5408 58875 7590 03/28/2017 T 07A fr T 07A T T P EXAMINER Julio Loza, Esq. DEAN, RAYMOND S 305 North Second Ave., #127 Upland, CA 91786-6064 ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 03/28/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): julio-pto@lozaip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL G. MARTINEZ, RAMON S. GALLEGOS, LUIS PAULINO MENDEZ-BADILLA, RICHARD PICADO-HIDALGO, VICTOR BERMUDEZ- MORA, PABLO ALVARADO-MOYA, RONALD ESCALANTE-PEREZ, EUGENIO SALAZAR-BRENES, and MARI ANITA ALVARENGA-LOPEZ Appeal 2017-000194 Application 12/100,0811 Technology Center 2600 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1â€”20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Canam Technology Inc. App. Br. 1. Appeal 2017-000194 Application 12/100,081 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed inventions relate to "the application of digital signal processing techniques to enable versatile break-in signal insertion (e.g., data and/or control signals) within selected communication channels of a communication system." Spec. 12. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 1. A method operational on a wireless repeater adapted to insert break-in signals under the control of a local operator, comprising: (a) receiving a wireless signal at the wireless repeater from a network infrastructure device, the wireless signal comprising a plurality of different downlink communication channels, wherein the wireless signal is broadcasted by a service provider to subscriber recipient user terminals via the network infrastructure device; (b) dividing the wireless signal into its plurality of downlink communication channels including a first communication channel allocated to one or more downlink recipient user terminals; (c) inserting a local break-in signal at the wireless repeater, under control of the local operator independent from the service provider, into the first communication channel if the break-in signal is ready for insertion, where insertion of the 2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed Feb. 8, 2016); Reply Brief ("Reply Br.," filed Sept. 28, 2016); Examiner's Answer ("Ans.," mailed July 28, 2016); Final Office Action ("Final Act.," mailed June 8, 2015); and the original Specification ("Spec.," filed Apr. 9, 2008). 2 Appeal 2017-000194 Application 12/100,081 break-in signal interrupts, replaces, or mixes with an original signal in the first communication channel and the break-in signal includes a content message; and (d) combining content of the first communication channel and at least some of the remaining plurality of downlink communication channels into a retransmission signal. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Dinkel et al. ("Dinkel") US 2003/0114103 Al June 19, 2003 Lovinggood et al. ("Lovinggood") US 6,615,021 B1 Sept. 2, 2003 Piwowarski et al. ("Piwowarski") US 2004/0125764 Al July 1,2004 Binzel et al. ("Binzel") US 2005/0037728 Al Feb. 17, 2005 Segal et al. ("Segal") US 2005/0276237 Al Dec. 15,2005 Eisold et al. ("Eisold") US 2007/0252688 Al Nov. 1,2007 Cai US 7,873,002 B2 Jan. 18,2011 (filed Sept. 19, 2007) Rejections on Appeal Rl. Claims 1â€”4, 6, 7, 11â€”16, 18, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combined teachings of Dinkel, Binzel, Lovinggood, and Eisold. Ans. 2. 3 Appeal 2017-000194 Application 12/100,081 R2. Claim 5 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combined teachings of Dinkel, Binzel, Lovinggood, Eisold, and Segal. Ans. 11. R3. Claim 10 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combined teachings of Dinkel, Binzel, Lovinggood, Eisold, and Piwowarski. Ans. 12. R4. Claims 8, 9, 17, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combined teachings of Dinkel, Binzel, Lovinggood, Eisold, and Cai. Ans. 13. CLAIM GROUPING Based on Appellants' arguments (App. Br. 1â€”16), we decide the appeal of obviousness Rejection R1 of claims 1â€”4, 6, 7, 11â€”16, 18, and 19 on the basis of representative claim 1. We decide the appeal of obviousness Rejection R2 of claim 5, not separately argued, infra. We decide the appeal of obviousness Rejection R3 of separately argued claim 10, infra. We decide the appeal of obviousness Rejection R4 of claims 8, 9, 17, 20 on the basis of representative claim 8. ISSUES AND ANALYSIS In reaching this Decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1, 8 and 10, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is 4 Appeal 2017-000194 Application 12/100,081 taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments for emphasis as follows. 1. $103 Rejection R1 of Claim 1 Issue 1 Appellants argue (App. Br. 10-15; Reply Br. 2â€”5) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Dinkel, Binzel, Lovinggood, and Eisold is in error. These contentions present us with the following issues: (a) Did the Examiner err in finding the cited prior art combination teaches or suggests the contested limitation (c), "inserting a local break-in signal at the wireless repeater, under control of the local operator independent from the service provider," as recited in claim 1? (b) Did the Examiner err in rejecting claim 1 under Â§ 103 by not providing proper motivation to combine the references in the manner suggested? Analysis Issue 1(a)â€”All Limitations Taught or Suggested Appellants contend the cited references fail to disclose limitation (c). App. Br. 11. Appellants specifically contend: First, nowhere does the Eisold or the Final Office Action specifically identify the claimed "local operator" and "service provider". In fact, Eisold appears to teach that the "central 5 Appeal 2017-000194 Application 12/100,081 stations" are operated by the service provider, which is contrary to the explicit claim language that the "local operator [is] independent from the service provider". . . Throughout Eisold, it is clear that the warning messages are sent under the control of a centralized content provider, not a local operator as claimed. App. Br. 12. Appellants further argue: Second, in Eisold, the "broadcast is directed to the audiences of the various radio and television stations with no discrimination." (See Para. 6 of Eisold). . . . Thus, Eisold merely teaches coded broadcasts and has nothing to do with "locally [sic] break-in signals" as claimed. In fact, the coded broadcasts of Eisold do not break into any other signal, they are merely broadcasted and the receiver is left to decide whether it should heed the warning or not depending on location. App. Br. 12â€”13. Appellants also contend, "However, the emergency indicator in Bizel [sic] is quite different from the claimed 'break-in signal'." Reply Br. 2. In particular, Appellants argue: Bizel [sic] relies on a two-part message, a "broadcast message" plus an "emergency status indicator". First, the "broadcast message" in Bizel [sic] appears to be sent on a separate dedicated channel as special handling and overriding function are required at the wireless portable communication device (see Para. 12, lines 20â€”24 â€” "The overriding function is designed to override or bypass any conflicting user selected message handling setting such that the broadcast message is received, and the contents of the broadcast message are communicated without delay"). Consequently, the "broadcast message" in Bizel [sic] is not an "insertion of the break-in signal [that] interrupts, replaces, or mixes with an original signal in the first communication channel [prior to transmission]" (emphasis added) as recited in the claims. 6 Appeal 2017-000194 Application 12/100,081 Second, the "emergency status indicator" of Bizel [sic] appears to be a bit that is transmitted in a predetermined bit or signaling message. Again, such "emergency status indicator" cannot be an "insertion of the break-in signal [that] interrupts, replaces, or mixes with an original signal in the first communication channel and the break-in signal includes a content message" (emphasis added) as recited in the claims. Reply. Br. 3. As our reviewing court has held, "[i]n the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). We note method claim 1 specifically recites a conditional limitation that need not always be met, i.e., 7 Appeal 2017-000194 Application 12/100,081 inserting a local break-in signal at the wireless repeater, under control of the local operator independent from the service provider, into the first communication channel if the break-in signal is ready for insertion, where insertion of the break-in signal interrupts, replaces, or mixes with an original signal in the first communication channel and the break-in signal includes a content message. (Emphasis added). As a matter of claim construction under the broadest reasonable interpretation, we conclude if the break-in signal is not ready for insertion, then the claimed break-in signal is not required to be inserted at the wireless repeater. Claim 1. See Ex parte Schulhauser, No. 2013-007847, at *9, 2016 WL 6277792 (PTAB, April 28, 2016) (precedential) (holding "The Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met."); see also Ex parte Katz, 2011 WL 514314, at (BPAI Jan. 27, 2011). We apply the precedential guidance of Schulhauser and conclude the Examiner need not present evidence establishing the obviousness of the conditional performance of the insertion of a break-in signal in claim 1, because it is not required to be performed under a broadest reasonable interpretation of the claim (i.e. instances where the break-in signal is not ready for insertion). Therefore, we consider Appellants' argument that the cited references fail to teach or suggest the conditional steps of claim 1 unavailing, because it 8 Appeal 2017-000194 Application 12/100,081 is not commensurate with the broadest reasonable interpretation of claim 1. See Schulhauser, Appeal No. 2013-007847, at *9. Accordingly, as a matter of claim construction, and on this record, we sustain the Examiner's rejection of claim 1. Assuming, arguendo, our reviewing court were to conclude the conditional limitation is required to be performed within the scope of method claim 1, we are not persuaded by Appellants' argument stated above because we find the cited references teach or at least suggest the contested limitations. We agree with the Examiner's finding that Eisold's central station teaches or at least suggests the "local operator independent from the service provider" as recited in claim 1. Ans. 15, citing Eisold 1 6. We agree with the Examiner because Eisold's central station could operate independently of the National Weather Radio or SAME system. Eisold 129. We further agree with the Examiner's finding that Binzel's local base station, which receives an emergency indicator and an emergency message, inserting an emergency message to the broadcast, teaches or at least suggests "inserting of a local break-in signal at the wireless repeater is under the control of the local operator independent from the service provider." Ans. 15 (citing Binzel, Fig. 4,13,11. 14â€”19,15,11. 10-43) (emphasis omitted). We agree with the Examiner's finding because Binzel's local base station teaches or suggests both a "wireless repeater" and a "local operator." Id. We also find Binzel's local base station broadcasting an emergency message and overriding the service provider's normal operation teaches or suggests the disputed limitation "under control of the local operator independent from 9 Appeal 2017-000194 Application 12/100,081 the service provider," as recited in claim 1. Binzel, Fig. 3, steps 302, 304, 306, 308, Fig. 4. Regarding Appellants' contention, Eisold doesn't teach "inserting a local break-in signal," we find Appellants are arguing the references separately, when the rejection is for obviousness under Â§ 103, taking into account what the reference combination would have suggested to a person of ordinary skill in the art. The Examiner cites Binzel for this limitation. Final Act. 3â€”4, citing Binzel, 115,11. 10-43. We agree with the Examiner's finding that Binzel's emergency status indicator associated with the emergency message teaches or at least suggests a local-break-in signal. Id. We agree with the Examiner's finding because the receipt of this emergency status indicator activates an overriding function in the communication device whereby the broadcast message is delayed or dismissed and the emergency message is communicated instead. Id. Issue 1 (b)â€”Motivation to Combine is Proper Appellants also argue the Examiner has not set forth a prima facie case of obviousness because, allegedly, "there is no objective motivation" to combine the cited references. App. Br. 13. Appellants specifically argue "the distinct teachings of these references are being improperly combined using [Appellants] claims as a road map .... For instance, there are several possible ways in which teachings of the cited references may be combined, but none of those ways necessitates the combination of the claimed elements." App. Br. 14. We disagree with Appellants and find the Examiner has set forth a prima facie case of obviousness including motivation to combine the 10 Appeal 2017-000194 Application 12/100,081 references in the manner suggested (Final Act. 4â€”5, Ans. 15â€”16) which meets the articulated reasoning and rational underpinning requirements of KSR, albeit one with which Appellants do not agree.3 Appellants allege: barring Applicants' own disclosure, the combination of the recited limitations is not obvious from the cited references. Applicant submits that Applicants' claims are being inappropriately used as a roadmap combine the prior art references .... The distinct teachings of these references are being improperly combined using Applicants claims as a road map .... [and] the Final Office Action fails to indicate how these distinct approaches may be combined. App. Br. 14. We disagree with Appellants' impermissible hindsight arguments and particularly agree with the Examiner's findings in this regard. The motivation to combine Dinkel and Binzel is for the purpose of a communicating information to a user regarding an emergency or critical situation as soon as possible, which is taught by Binzel. The motivation for combining Dinkel, Binzel, and Lovinggood is for an alternative means for achieving the predictable result of retransmitting signals. The motivation for combining Dinkel, Binzel, Lovinggood, and Eisold is for the purpose of providing a warning system for warning of all potential disasters that is very inexpensive, that is very easy to utilize, that can be directed to regions as large as a nation or several nations or directed to regions as small as individual residences, and that can be made available to virtually every person in the country, which is an improved process. 3 The relevant inquiry is whether the Examiner has set forth "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). 11 Appeal 2017-000194 Application 12/100,081 Ans. 16. We first note, the presence or absence of a reason "to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Here, we see the hindsight question before us as a balancing test, i.e., whether the Examiner's proffered combination of references is merely: (1) "the predictable use of prior art elements according to their established functions" (KSRInt'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)), consistent with common sense; or, (2) would an artisan reasonably have combined the cited references in the manner proffered by the Examiner but for having the benefit of the claim to use as a guide (i.e., impermissible hindsight)? After reviewing the respective teachings and suggestions of the cited references, we find the evidence more strongly supports the first prong of the balancing test, ft is our view that it would have been obvious to an artisan having general knowledge of emergency communications, including wireless communications involving repeaters, to combine the references for the reason articulated by the Examiner, as quoted above. Ans. 16. We find the Examiner provided sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See KSR 550 U.S. at 418; see also Ans. 16; Final Act. 4â€”5. Moreover, Appellants have not demonstrated that the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 12 Appeal 2017-000194 Application 12/100,081 U.S. at 418). Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013); see also App. Br. 22, "EVIDENCE APPENDIX . . . NONE"). Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art, or in the resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness Rejection R1 of independent claim 1 and claims 2â€”4, 6, 7, 11â€” 16, 18, and 19, which fall therewith. See Claim Grouping, supra. 2. $103 Rejection R2 of Claim 5 Issue 2 Did Appellants provide persuasive evidence or argument that the Examiner erred in rejecting claim 5 under Â§ 103? Analysis In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of dependent claim 5 under Â§ 103 (see App. Br. 10â€”16), we sustain the Examiner's rejection of this claim, as it falls with its respective independent claim 1. When Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). Arguments not made are waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). Accordingly, we sustain Rejection R2 of claim 5. 13 Appeal 2017-000194 Application 12/100,081 3. $103 Rejection R3 of Claim 10 Issue 3 Did Appellants provide persuasive evidence or argument that the Examiner erred in rejecting claim 10 under Â§ 103? Analysis Regarding claim 10, based on our review of the record before us, Appellants make conclusory arguments (App. Br. 15â€”16), and fail to present substantive arguments supported with specific factual evidence of sufficient character and weight to persuade us of error regarding the Examiner's findings of facts and ultimate legal conclusion of obviousness. Mere attorney arguments and conclusory statements unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants merely argue Piwowarski does not disclose the recited claim limitations. App. Br. 15â€”16. Such statements are not considered to be arguments. 37 C.F.R. Â§ 41.37(c)(l)(vii) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of 14 Appeal 2017-000194 Application 12/100,081 the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejection R3 of dependent claim 10. 4. $ 103 Rejection R4 of Claims 8, 9, 17, and 20 Issue 4 Did Appellants provide persuasive evidence or argument that the Examiner erred in rejecting claim 8 under Â§ 103? Analysis Similar to claim 10, supra, Appellants' arguments regarding dependent claim 8 are presented by way of attorney argument only, with no citation to evidence of record to support their contentions. App. Br. 15. Although Appellants attempt to expand their argument in the Reply Brief (Reply. Br. 5â€”6), we find their arguments are untimely because they were not presented in the main Brief and the Examiner has not changed the thrust of his rejection of claim 8 in the Answer. Compare Final Act. 13â€”14 with Ans. 13 and 17; and see 37 C.F.R. Â§ 41.41(b)(2). Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejections of dependent claim 8, and claims 9, 17, and 20, which fall therewith. See Claim Grouping, supra. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2â€”6) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a reply brief that were not raised in the appeal brief or are not responsive to arguments raised in the Examiner's 15 Appeal 2017-000194 Application 12/100,081 Answer will not be considered except for good cause, which Appellants have not shown. See 37 C.F.R. Â§ 41.41(b)(2). CONCLUSION The Examiner did not err with respect to obviousness Rejections Rlâ€” R4 of claims 1â€”20 under 35 U.S.C. Â§ 103(a) over the cited prior art combination of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1â€”20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 16